Andersen should have consulted….
1 Dec
If a trade mark registration is not used for a certain period of time then it can be cancelled on the basis of non-use. If there are legitimate reasons for non-use, however, then the registration may not be cancelled.
The mark ANDERSEN CONSULTING was registered as a European Community trade mark, but had not been used for some time. The owner sought to defend the registration from revocation on the basis of non-use by arguing that because of a conviction in the USA for its audit activities relating to ENRON (a conviction that was later overturned) which prevented them from trading in the US for 3 years to 2005 there were proper reasons for non-use.
Rejecting this argument, the Cancellation Division held that the reasons for non-use must apply to the whole or a substantial part of the period during which use needs to be shown. In addition, the reasons must apply to the relevant goods and services – in this case the coverage of the registration was broader than simply “auditing services”, and so the ban in the US could not validly be applied to those other goods and services.
Interesting case… I noticed that the party that applied to cancel the registration is the owner of the trade mark ARTHUR ANDERSEN (Arthur Andersen rebranded as ACCENTURE – should we expect Arthur Andersen to return?)… http://tinyurl.com/yhako2z
